Ex Parte Duan et alDownload PDFPatent Trial and Appeal BoardJan 13, 201713007610 (P.T.A.B. Jan. 13, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/007,610 01/15/2011 Zhiyong Duan 4532670/97553-KEM 176 7068 26386 7590 01/18/2017 DAVIS, BROWN, KOEHN, SHORS & ROBERTS, P.C. THE DAVIS BROWN TOWER 215 10TH STREET SUITE 1300 DES MOINES, IA 50309 EXAMINER SAYALA, CHHAYA D ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 01/18/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): kentherink @ davisbrownlaw .com pattylaw@davisbrownlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ZHIYONG DUAN, YONGCAI LIU, DONG CHEN and YE LAO Appeal 2015-008200 Application 13/007,610 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 7—9. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appeal 2015-008200 Application 13/007,610 Appellants’ appealed invention is illustrated by independent claim 7, reproduced below: 7. A method of increasing the level of a carotenoid in the milk of a ruminant animal by protecting the carotenoid against degradation in the rumen of the ruminant animal, comprising the steps of: (a) heating a solid oil above its melting point; (b) admixing a carotenoid ester-containing oleoresin into the melted oil; (c) cooling the mixture until it solidifies; (d) mechanically processing the solid mixture into an animal feed composition; and (e) feeding the animal feed composition to a ruminant animal wherein the level of the carotenoid in the milk of the ruminant animal is increased. Appellants request review of the Examiner’s rejection of claims 7—9 under 35 U.S.C. § 103(a) as unpatentable over Du (WO 2009/027850 A3, published March 5, 2009 and relying on US 8,034,983 B2, issued October 11, 2011, as the English equivalent)1; Funda (US 2007/0248683 Al, published October 25, 2007); Ballet (Ballet et al., 19 Vitamins in Forages, Forage Evaluation in Ruminant Nutrition 399-431(2000); Noziere et al., Carotenoids for ruminants: From forages to dairy products 131 Animal 1 The Examiner’s rejection statement in the Final Action does not identify the English equivalent relied upon. A review of the prosecution record indicates US 8,034,983 B2 to Du was designated as the English equivalent by the Examiner. Accordingly, any discussion of Du in the opinion will refer to this US patent. 2 Appeal 2015-008200 Application 13/007,610 Feed Science and Technology 418-450 (2006); Popplewell (US 6,245,366 Bl, issued June 12, 2001); and Wellons (US 5,206,041, issued April 27, 1993). App. Br. 8. OPINION2 After review of the respective positions provided by Appellants and the Examiner, we REVERSE the Examiner’s prior art rejection of claims 7— 9 for the reasons presented by Appellants. We add the following. Independent claim 7 is directed to a method of increasing the level of a carotenoid in the milk of a ruminant animal by admixing the carotenoid ester-containing oleoresin with an oil to make the carotenoid resistant to degradation in the rumen. Spec. 12. We refer to the Examiner’s Final Action for a statement of the rejection. Final Act. 2—5. Appellants argue the cited art does not disclose the use of hydrogenated oil as a physiologically acceptable carrier for the purposes of protecting carotenoids against ruminal degradation to increase the level of a carotenoid in the milk of a ruminant animal as claimed. Reply Br. 2—5; App. Br. 10-13. Appellants additionally argue the Examiner has not provided any rationale as to why a person having ordinary skill in the art would have been motivated to combine carotenoids and oil for the purposes of protecting carotenoids against ruminal degradation with a reasonable likelihood of success given that Noziere, Ballet and Popplewell do not teach or suggest 2 We limit our discussion to independent claim 7. 3 Appeal 2015-008200 Application 13/007,610 how carotenoids can be protected against ruminal degradation. Reply Br. 3— 5; App. Br. 11—12. We agree with Appellants. The Examiner found the combined references of Ballet and Noziere disclose feeding the carotenoid to animals and that the reduced degradation of carotenoids by using protected sources or in preserved forages would increase carotenoid levels in milk. Final Act. 3^4; Noziere 248, Ballet 416. Ballet also discloses supplementing animal feeds with an encapsulated vitamin A that significantly reduces the rate of vitamin A degradation in the rumen to address vitamin deficiency issues related to metabolic disorders of the animal. Ballet 399 and 420. The Examiner also found Popplewell discloses the steps of mixing the active agent (such as vitamins) with molten oil and cooling the slurry to form the solid mass for use in food products. Final Act. 4; Popplewell col. 5,1. 63- col. 6,1. 10 and col. 6,11. 22—28. However, the Examiner directs us to no portion of these references that disclose mixing carotenoids with oils to protect carotenoids against ruminal degradation to increase the level of a carotenoid in the milk of a ruminant animal as claimed. The Examiner has not provided an adequate technical explanation of why one skilled in the art would have found the method for encapsulating vitamins would have been suitable for encapsulating carotenoid with a reasonable expectation that such encapsulation would protect the carotenoids as claimed. Under these circumstances, we cannot conclude that the Examiner has met the minimum threshold of establishing obviousness under 35 U.S.C. § 103(a). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). 4 Appeal 2015-008200 Application 13/007,610 Accordingly, we reverse the Examiner’s prior art rejection under 35 U.S.C. § 103(a) for the reasons presented by Appellants and given above. ORDER The Examiner’s prior art rejection of claims 7—9 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation